FOREIGN TRADE MARKS 

(FOR ATTORNEYS ONLY) 

CHARGES AND GENERAL INFORMATION 



MARKS & CLERK 

Established 1887 
MONADNOCK BLOCK 220BROADWAY 900 F STREET, N. W. 

CHICAGO, ILL. NEW YORK WASHINGTON, D. C. 

57 & 58 LINCOLN'S INN FIELDS. LONDON, W. C. 

August 1st, 1919. 



Telephone Numbers: Cable Addresses: 

New York, Cortlandt 8472 M ARKLERK— New York 

New York, " 8473 " —Chicago 

Chicago, Harrison 2219 " —Washington, D. C. 

Washington, Main 1831 " —London (England) 

Codes — Western Union, Al and A. B. C. 



FOREIGN TRADE MARKS 



(FOR ATTORNEYS ONLY) 



CHARGES AND GENERAL INFORMATION 



MARKS & CLERK 



Established 1887 



MONADNOCK BLOCK 

CHICAGO, ILL. 



220 BROADWAY 

NEW YORK 

57 & 58 LINCOLN'S INN FIELDS, LONDON, W. C. 



900 F STREET, N. W. 

WASHINGTON, D. C. 



August Ist, 1919. 



Copyright 1919 by 
MARKS & CLERK 



TO ATTORNEYS-AT-LAW V\«-- 

Inclusive charges for trade mark applications in foreign countries are set out herein. The 
remarkable growth of the foreign trade between the United States and foreign countries and 
the misunderstanding which exists as to the practice abroad in the matter of the protection of 
Trade Marks warrants attorneys in calling the attention of their clients to the necessity 
of registering their trade marks abroad before they are advertised in the Official Gazette or trade 
publications or are used in foreign territory. 

PIRACY AND PROTECTION OF TRADE MARKS ABROAD 

We have previously called serious attention to the necessity of protecting Trade Marks 
abroad in order to prevent piracy of the property rights therein, and owing to the misunder- 
standings that have arisen we desire to remind attorneys that in many foreign countries the right 
to sue for infringement of trade marks is only acquired by registration, and prior use of a mark 
does not entitle the user to registration in such countries, based on the registration effected in 
the home country. 

REGISTRATION GRANTED BEFORE USE ABROAD 

It is not necessary to make use of a trade mark in foreign countries before applying 
for registration, as the laws abroad do not require evidence to be furnished of the use of a mark 
as is the case in registering in the United States. Further, a mark may be registered after use 
abroad provided it has not already been registered by others for the same or similar goods. 

VALUABLE MARKS STOLEN. 

In our extensiv.e experience in connection with the protection of industrial property abroad, 
cases have frecjuenti^jbeen brought to our knowledge of trade marks being pirated and registered 



in certain countries, even after fifty years' use of the mark by the original owner thereof, who 
finds himself in the position that he must give up his mai-k to someone who has fraudulently regis- 
tered the same, and who then relies on the trade mark law of the particular country in question 
to entitle him to stop the continued use of such mark by the originator or real owner thereof. 
We have been consulted in such cases in connection with most of the South American Republics, 
in South Africa, Australia, Germany, Norway, Spain, Sweden, Denmark, Portugal, Japan, Mexico 
and elsewhere. It cannot be too strongly urged upon your clients that they should secure trade 
mark entry on the Ofificial Registers of any marks which they are using or contemplate using 
in all foreign countries of the world. 

REGISTRATION BY SELLING AGENTS DANGEROUS. 

In soiue cases American and other corporations have allowed their agents abroad to reg- 
ister the mark in the agent's name, such agent by written contract undertaking to transfer the 
mark to the rightful owners on the term_ination of the agency agreement. This is an objectionable 
practice in view of the fact that the exclusive use of the mark in some countries by the agent 
may give such agent the personal property rights in the mark, while in certain countries the laws 
provide that no legal assignment of such a trade mark can convey the same to the real owners, 
unless the business and good will of the agent is at the same time assigned to the party really 
entitled to the Trade Mark. Thus, for instance, if an ag-ent in Austria has registered a mark 
in his own name, he cannot convey that mark to the firm or corporation whose goods he has been 
marketing thereunder, unless he sells the whole of his business to that concern in connection 
with goods of the character dealt with under the trade mark. It will be readily understood that 
an agent cannot be expected to go out of business altogether, when assigning a trade mark to 
the firm whose goods he has previously been selling thereunder, and yet unless an assignment 
of this comprehensive character is effected, no legal transfer of the rights in the trade mark can 
be recorded. 



OWNERSHIP BY USER. 

There are but few countries abroad where actual ownership of a trade mark is recognized 
or obtained by use of the mark, as is the case in the United States. In the following" countries 
registration alone gives the ofBcial or recognized ownership of a trade mark : Argentine Re- 
public, Austria, Bolivia, Chile, Costa Rica, Cuba, Dominican Republic, Germany, Guatemala, 
Hungary, Japan, Nicaragua, Norway, Paraguay, Peru, Portugal, Serbia, Sweden, Turkey, Uruguay 
and Venezuela. 

PROTECTION BY REGISTRATION THE SAFEST AND CHEAPEST WAY. 
RELIABILITY OF ATTORNEYS. 

We have associate and personal arrangements with high class patent and trade mark 
attorneys in all the important countries of the world, whereby we can secure at the lowest pos- 
sible rates effective trade mark protection, and we are always at the service of attorneys to 
advise them fully as to the best means of securing registration or of protecting their clients 
against the piracy of their trade marks. We keep on file translations of all trade mark laws of 
the various countries and shall be happy to answer specific inquiries at any time relating to 
matters of this character. 

PAN AMERICAN CONVENTION. 
Northern Group 

The Convention entered into in the year 1910 between the United States and several of the 
countries comprised in the Northern group of American Republics has now been ratified by the 
necessary number of countries (two-thirds) required for the establishment of the Bureau at 
Havana. This Bureau is now being organized, but the date when it will be in a position to do 
business is a matter of considerable uncertainty as the necessary funds will only become available 
after appropriation of the respective amounts by the legislatures of the different countries com- 
prised in the Northern group. 

4 



It is impossible as yet to determine how far the Convention will operate to protect trade- 
mark owners who take advantage of the International registration at the Havana Bureau, when 
it is open for business. 

The Convention contemplates protection of trade marks throughout the following group 
of countries, which have so far ratified the same : 

Costa Rica, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, United States. 

It has not ])een ratified and will in no way apply to: 

Mexico and Salvador 

so that even after the Convention becomes operative, separate protection in these States will have 
to be secured. 

Southern Group 

The Convention has not been ratified by a sufficient number of the Southern group of 
countries to bring it into operation, and it will probably be many months before this ratification 
is effected so as to enable registrations to be carried out at the proposed International Bureau at 
Rio de Janeiro to cover the Southern group. 

The Convention does not in any way nullify or override the local laws of the various coun- 
tries and it is uncertain whether the same facilities for taking infringement proceedings will be 
afforded under the Convention as are available under the domestic laws of the different countries. 
Until decisions have been rendered enforcing the rights intended to be acquired by registra- 
tions effected at the Northern Bureau, it is impossible to say how far it will be safe to rely on the 
International registration when applications are accepted and carried through. 

As the main pirate countries are not affected by this ratification by the Northern coun- 
tries, it still becomes essential for traders to register their trade marks independently in any event 
under the laws of the various countries of South America. 



BERNE TRADEMARK CONVENTION. 

The United States is not a member of the Berne Trademark Convention and in recent 
years many valuable rights have been lost by reason of the piracy of trade marks which have 
been registered by a citizen or corporation of one of the countries comprised in the Berne Con- 
vention, which registration has been extended by a single convention registration to cover the 
whole of the countries of the Berne Convention, which are as follows : Austria, Belgium, Brazil, 
Cuba, Spain, France, Hungary, Italy, Mexico, Holland, Portugal, Switzerland and Tunis. 

As applications for the registration of American trade marks have been more extensively 
liled in the last two or three years, it has been found that foreign pirates have frequently resorted 
to this objectionable practice of monopolizing the trade marks of others and so long- as these 
International registrations are of record and extend to the whole of the countries above re- 
ferred to, it is impossible in many cases to secure a registration for the rigditful American owner 
of the mark until the International registration has been cancelled. As this International registra- 
tion is in most instances based on a registration in a country, the law of which recognizes those 
first to register a mark as the owner thereof, rather than the first to use a mark, the American 
applicant finds himself faced with the danger of infringing trade mark rights acquired by a pirate 
in a large group of countries under a single International registration effected at Berne, Switzer- 
land. Moreover, as the United States is not a party to this Convention, no redress apparently 
can be secured. The necessity, therefore, of separate registration in each of the countries 
covered by the Berne Convention will be apparent. 

COST AND DURATION OF REGISTRATIONS 

The list hereunder gives every country granting any form of trade mark protection. The 
figures quoted hereunder include cost of certified copies of the U. S. registration (where re- 
quired), electros and prints of the trade mark, legalization of the powers of attorney and -of the 

6 



certified copies where called for, translation expenses (translation and pul)lication up to 500 
words of text only in Brazil), and all expenses in carrying through the applications and obtaining 
registration of the marks unless prior registrations have to be overcome or oppositions are met 
with after the applications are allowed. Where attorneys furnish the certified copies, electros and 
prints, proper allowances for same will be made. 

In those countries against which an asterisk appears, a basic registration in the United 
States is necessary before registration will be granted to U. S. citizens or corporations. 

Business is conducted with attorneys only, and the figures quoted herein are confidential. 
Attorneys are respectfully requested not to place this booklet or the information contained 
therein before any manufacturer or corporation. 

NOTES. 

In some countries where proof of prior registration in the applicant's home country is 
called for, this can be dispensed with. This usually involves the preparation of special papers, 
the filing of a special application to the Government of the country, and additional expense, so 
that it should be resorted to only in cases of absolute necessity. 

(a) Brazil. When the certified copy of the home registration and the certificates attached 
thereto exceed 500 words, a charge of $3.00 per hundred words is made for additional transla- 
tion and publication. A special application not based on the U. S. registration can be obtained 
for a fee of $110,00, when the mark in question has not been registered in the U. S., subject 
to the same increase for additional translation and publication of the necessary documents as 
above. 

(b) Salvador — Taxes. Taxes are now payable on Trade Marks in December of each year 
of the duration. Our charge for efifecting payment of each year's tax is $5.00, including the 
government fee. The prices quoted cover five years' taxes. 

7 



MARKING OF GOODS. 

Full particulars of the marking requirements are given on the envelopes in which the 
registration certificates are sent out. 

Chile: The law provides that goods manufactured or sold under a registered trade mark 
shall bear" beneath the trade mark, if the proprietor is a manufacturer, the following marking: 

Marca de Fabrica, or the abbreviation M. de F. 

If the proprietor is a merchant or commercial concern, the marking should read : 

Marca Comercial, or the abbreviation M. C. 

Compliance with the above requirement is necessary to enable a registered proprietor to 
collect damages, etc., in case of infringement. 

Mexico: There are similar provisions in Mexico, viz: that goods shall bear the name and 
address of the owner and, if the proprietor is a manufacturer, the marking: 

Marca Industrial Registrada, or the abbreviation M. Ind. Rgtrda., with the 
number and date of registration. 
If the proprietor is a merchant or commercial concern, the marking should read : 

Marca de Comercio Registrada, or the abbreviation M. de C. Rgtrda., with the 
number and date of registration. 

Failure on the part of a registered owner of a mark to observe the above requirements 
will prevent collection of damages, etc., in case of infringement. 



Country Duration 

Algeria (covered by France) 

Argentine 10 years 

Australia 14 years 

* Austria . 10 years 

Bahamas 14 years 

Barbados Unlimited 

Belgian Congo Unlimited 

Belgium Unlimited 

Bermudas 14 years 

Bolivia 10 years 

*Brazil, See Notes (a) 15 years 

Brazil 15 years 

British Central Africa (Nyasaland) 14 years 

British Guiana 14 years 

British Honduras (Advertising) ... 10 years 
British New Guinea (Papua) 

(covered by Australia) 

British North Borneo Unlimited 

*Bulgaria 10 years 

Burmah Unlimited 

Canada (Specific) 25 years 

(General) Unlimited 



Inclusive 
Charge 

62.00 
45.00 
32.00 

42.00 
36.00 
37.00 
32.00 
50.00 
57.00 
69.00 



110.00 
41.00 
48.00 
45.00 



60.00 
68.00 
33.00 

38.00 
45.00 



Notes 

No proper trade mark statute 



Based on U. S. Registration. 
Includes 500 words transla- 
tion. Extra translation $3.00 
per 100 words. 
Independent of U. S. Reg'n. 



No proper trade mark statute 



Country Duration 

Ceylon 14 years 

Channel Islands 

(Guernsey or Jersey) each 14 years 

Chile 10 years 

^ China (Shanghai) Unlimited 

(Tien Tsin) Unlimited 

(Manchuria) Unlimited 

Colombia 20 years 

Cook's Islands (covered by New 

Zealand) 

Costa Rica ^ 15 years 

Crete (covered by Greece) 

*Cuba 15 years 

Curacao 20 years 

Cyprus 14 years 

Czechoslovakia 10 years 

Deccan (Advertising) 10 years 

'•'Denmark 10 years 

Dominican Republic (See Santo 

Domingo) 

Dutch East Indies (Java, etc.) .... 20 years 
Dutch Guiana (See Surinam) 

East Africa Protectorate 14 years 

Ecuador 20 years 

10 



Inclusive 
Charge 

45.00 

30.00 
45.00 
25.00 
25.00 
40.00 
90.00 



48.00 

48.00 
40.00 
45.00 
45.00 

45.00 
50.00 



40.00 



45.00 
79.00 



Registration at Consulates 
and Customs Bureaus; U. S. 
registration not essential 



Estimated. 

No proper trade mark statute. 



British regfistration advisable 



Inclusive 

Country Duration Charge 

Egypt (Cairo, Mansurah or Alex- 
andria) • 10 years 30.00 

(Cairo and Mansurah) 10 years 45.00 

(Cairo, Mansurah and Alex- 
andria) 10 years 60.00 

Eritrea (covered by Italy) 

Falkland Islands 14 years 54.00 

Federated Malay States 10 years 38.00 

Fiji Islands 7 years 53.00 

*Finland 10 years 31.00 

France 15 years 27.00 

Gambia 14 years 45.00 

*Germany 10 years 40.00 

Gibraltar (Advertising) 10 years 53.00 

Gold Coast 14 years 46.00 

Great Britain 14 years 21.00 

*Greece (including Crete) 10 years 70.00 

Grenada (Advertising) 10 years 38.00 

^Guatemala 10 years 72.00 

Haiti Expires with U. S. 40.00 

Hawaii (local registration) 20 years 32.00 

Holland 20 years 37.00 

*Honduras Unlimited 100.00 

11 



No proper trade mark statute. 
Registration at Courts. 



British registration necessary 
Advertising ; no proper trade 
mark statute. 



No proper trade mark statute. 



No proper trade mark statute. 
$10.00 extra when U. S. 
Reg'n. has been assigned. 



Inclusive 

Country Duration Charge 

Hong Kong 14 years 95.00 

^Hungary 14 years 32.00 

Hyderabad (Advertising) 10 years 45.00 

^Iceland 10 years 56.00 

India, (Calcutta) Unlimited 30.00 

India, (Cawnpore) Unlimited 30.00 

Italy Unlimited 41.00 

Jamaica 14 years 48.00 

Japan (Covers Korea) . . . ■ 20 years 48.00 

Johore (Advertising) 10 years 45.00 

Jugoslavia 10 years 45.00 

Leeward Islands 14 years 42.00 

Liberia 14 years 100.00 

Luxemburg 10 years 30.00 

Madag^ascar (covered by France) 

Malta and Gozo 14 years 37.00 

*Manchuria (Harbin, See China)-.. 

Mauritius Unlimited 40.00 

Mexico 20 years 31.00 

Morocco 20 years 47.00 

Mysore (Advertising) 10 years 45.00 

Negri-Sembilan (See Federated 

Malay States) 

12 



Notes 



No proper trade mark statute. 

No proper trade mark statute. 
No proper trade mark statute. 



No proper trade mark statute. 
Estimated. 



U. S. registration not es- 
sential. 
No proper trade mark statute. 



Inclusive 
Country Duration Charge 

Newfoundland Unlimited 38.00 

New Zealand 14 years 30.00 

Nicaragua 10 years 55.00 

Nigeria 14 years 52.00 

*Norway 10 years 39.00 

Nyasaland (British Central Africa) 14 years 41.00 

Oman (Advertising) 10 years 48.00 

Pahang (See Federated Malay 

States) 

*Panam,a 10 years 95.00 

Papua (covered by Australia) 

Paraguay 10 years 84.00 

Penang (covered by Straits Settle- 
ments) 

Perak (See Federated Malay States) 

Persia No law 

Peru 10 years 55.00 

Philippine Islands 

Independent Registration ■ 30 years 43.00 

*Deposit Registration • 20.00 

Poland 10 years 35.00 

Porto Rico 

Independent Registration 20 years 35.00 

*Deposit Registration 20.00 

*Portugal 10 years 36.00 

.13 



Notes 



No proper trade mark statute. 



Expires with U. S. Reg'n. 
Estimated. 



Expires with U. S. Reg'n. 



Country Duration 

Portuguese Colonies in Africa : — 

Angola 10 years 

Cape Verde. 10 years 

Guinea 10 years 

Thomas and Prince's Island... 10 years 

East Coast (Government Ter- 
ritory) 10 years 

East Coast (Nyasa Co.'s Terri- 
tory) 10 years 

East Coast (Mozambique Co.'s 

Territory) 10 years 

Portuguese Colonies in Asia : — : 

Macao 10 years 

Portuguese India 10 years 

Timor 10 years 

Rhodesia 14 years 

Rumania 15 years 

*Russia 10 years 



[nclusive 
Charge 


Notes 




29.00 


Portuguese 


Registration 


re- 


29.00 


quired. 
Portuguese 


Registration 


re- 


29.00 


quired. 
Portuguese 


Registration 


re- 


29.00 


quired. 
Portuguese 


Registration 


re- 


29.00 


quired. 
Portuguese 


Registration 


re- 


29.00 


quired. 
Portuguese 


Registration 


re- 


29.00 


quired. 

Portuguese 

quired. 


Registration 


re- 


29.00 


Portuguese 


Registration 


re- 


29.00 


quired. 
Portuguese 


Registration 


re- 


29.00 


quired. 

Portuguese 

quired. 


Registration 


re- 


57.00 








40.00 








58.00 


No commercial treatv in 


op- 



eration. 



14 



Country Duration 

St. Helena (Advertising) 10 years 

St. Lucia 14 years 

St. Vincent (Advertising) 10 years 

Salvador, See Notes (b) 20 years 

Santo Domingo 10 years 

15 years 

20 years 

Sandwich Islands (See Hawaii) 

Sarawak (Advertising) 10 years 

Selangor (See Federated Malay 

States) 

Serbia 10 years 

Seychelles Islands 14 years 

Siam 12 years 

Siberia 10 years 

Sierra Leone 14 years 

South Africa 14 years 

*Spain 20 years 

20 years 

Straits Settlements (Advertising) . . 10 years 

Sudan (Advertising) 10 years 

Surinam (Dutch Guiana) 20 years 

*Sweden 10 years 

*Switzerland ■ 20 years 

Trinidad and Tobago 14 years 

Tunis 15 years 



Inclusive 
Charge 

50.00 
57.00 
38.00 
75.00 
58.00 
63.00 
68.00 

40.00 



100.00 
48.00 
59.00 
58.00 
46.00 
48.00 
40.00 
55.00 
48.00 
38.00 
35.00 
50.00 
35.00 

50.00 
28.00 



Notes 

No proper trade mark statute. 

No proper trade mark statute. 
Taxes paid for 5 years 



No proper trade mark statute. 



Statute not yet in operation 
Estimated. 



5 years taxes paid 

20 years taxes paid 

No proper trade mark statute. 

No proper trade mark statute. 



15 



Country Duration 

Turkey 15 years 

Turks and Caicos Islands (covered 

by Jamaica) 

Uganda 

Ukraine 10 years 

*Uruguay 10 years 

Venezuela 30 years 

*Virgin Islands 

Windward Islands (See under sep- 
arate Islands) 

Zanzibar 14 years 



Cliarge 

100.00 



47.00 
50.00 
74.00 

48.00 
38.00 



66.00 



Expires with British Reg'n. 
Estimated. 



Expires with U. S. Reg'n. 



British or British Colonial 
registration required. 



*In those countries against which an asterisk appears a basic registration in the United 
States is necessary before registration will be granted to U. S. citizens or corporations. 



16 



LIBRARY OF CONGRESS 



019 970 262 2 



